Classic vs. Nominative Fair use
• U.S. trademark law provides for two forms of “fair use”
• “Classic” or descriptive fair use, in which the defendant uses the plaintiff’s mark to describe the defendant’s goods
• Statutory basis: 33(b)(4)
• “Nominative” fair use, in which the defendant uses the plaintiff’s mark to refer to the plaintiff
• Statutory basis: 43(c)(3)(A)
• Problem: “under this subsection”
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“Classic” Fair Use
33(b)(4) (15 USC 1115(b)(4))
• [The registration shall be subject to the following defenses of defects:] “That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin,”
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Court parsing
• The fair use defense requires that the Defendants show that their use of the Phrase was “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir. 2000)
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KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111(2004)
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KP Permanent Make‐Up v. Lasting Impression (U.S. 2004)
• KP alleged microcolor use since 1990/91
• Lasting 1992 application for Micro Colors, issued in 1993, “incontestable” in 1999
• In 1999, KP’s use of microcolor in ad brochure
• Dist. Ct. – on S/J, descriptive fair use, no confusion inquiry
• 9th – KP must also prove absence of confusion?
• Supreme Court?
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KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)
“[I]t is only when a plaintiff has shown likely confusion by a preponderance of the evidence that a defendant could have any need of an affirmative defense, but under Lasting's theory the defense would be foreclosed in such a case. ‘[I]t defies logic to argue that a defense may not be asserted in the only situation where it even becomes relevant.’ Shakespeare Co. v. Silstar Corp., 110 F. 3d, at 243.” Id. at 118
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Dessert Beauty, Inc. v. Fox, 568 F.Supp.2d 416 (S.D.N.Y. 2008) to avail itself of the fair use defense, DBI must have made use of Fox’s LOVE POTION mark (1) other than as a mark,
(2) in a descriptive sense, and (3) in good faith
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Sorensen v. WD‐40 Company (7th Cir. Feb. 25, 2015)
• Sorensen mark for corrosion inhibitor product:
• THE INHIBITOR
• Contains VCI substance
• Defendant’s use of mark:
• “WD–40 Specialist Long–Term Corrosion Inhibitor”
• And cross‐hair symbol
• 7th
• Descriptive fair use available for incontestable marks
• Was this use descriptive fair use?
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International Stamp Art, Inc. v. United States Postal Service (11th Cir. 2006)
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Bell v. Harley Davidson Motor Co. (S.D.C.A. 2008)
• Mark registrations by Bell for:
• RIDE HARD
• Apparel, decals, other merchandise
• Use as a mark?
• Use in descriptive sense?
• Good faith?
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Fortune Dynamic, Inc. v. Victoria’s Secret (9th Cir. 2010)
• Fortune
• Mark: DELICIOUS
• Product: women’s shoes
• Victoria’s Secret
• Mark: BEAUTY RUSH
• Promotional shirts for that product line
• 9th reverses the district court’s grant of summary judgment for Victoria’s Secret descriptive fair use defense
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Simple examples of classic fair use
• Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 14 U.S.P.Q.2d 1645 (S.D.N.Y. 1990) (“The dentists' choice for fighting cavities” for toothbrushes is fair use of plaintiff's trademark DENTIST‘S CHOICE for toothbrushes)
• Western Publishing Co. v. Rose Art Industries, Inc., 733 F. Supp. 698, 14 U.S.P.Q.2d 2059 (S.D.N.Y. 1990) (“golden” describing the gold color of children's writing slate not an infringement of plaintiff's mark GOLDEN for children's books and toys)
• Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066 (S.D. Cal. 1999), aff'd in part, rev'd in part on other grounds, 279 F.3d 796 (9th Cir. 2002) (Defendant Terri Welles was Playboy “Playmate of the Year” in 1981. Court held that her use of the words “Playmate of the Year 1981” in her title on her homepage and ‘'Playboy Playmate of the Year 1981’ and ‘Playmate of the Year 1981’ in her advertising banners fell within the classic fair use defense. “Her public persona is based on these titles and … [they] accurately describe her… . [T]he court cannot say that Ms. Welles took more than was necessary to merely identify herself or her goods.”) Greg R. Vetter • www.gregvetter.org Trademarks, Spring 2016
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